DECISION

 

Impossible Foods Inc. v. Roy Shrem / Birch Century

Claim Number: FA1910001865825

 

PARTIES

Complainant is Impossible Foods Inc. (“Complainant”), represented by Christian Marcelo of Perkins Coie LLP, Washington, USA.  Respondent is Roy Shrem / Birch Century (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <impossiblefoods-ipo.com>, registered with Namecheap, Inc..

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on October 8, 2019; the Forum received payment on October 8, 2019.

 

On October 9, 2019, Namecheap, Inc. confirmed by e-mail to the Forum that the <impossiblefoods-ipo.com> domain name is registered with Namecheap, Inc. and that Respondent is the current registrant of the name.  Namecheap, Inc. has verified that Respondent is bound by the Namecheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@impossiblefoods-ipo.com.  Also on October 10, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On November 1, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant relies on its rights in United States trademark registrations for the IMPOSSIBLE mark listed below and the goodwill that it has established by the use of the IMPOSSIBLE mark on its meat-free products which it claims are served in over 17,000 restaurants around the world and sold in retail store locations nationwide.

 

Complainant submits that it has acquired a significant reputation in the IMPOSSIBLE mark since it was founded in 2011, and states that especially since the launch of the IMPOSSIBLE burger, Complainant has been the focus of several media stories and news articles.

 

On August 22, 2019, several news articles were published speculating regarding a possible initial public offering (“IPO”) from Complainant On that same day, Respondent registered the disputed domain name <impossiblefoods-ipo.com>.

 

Complainant submits that the disputed domain name <impossiblefoods-ipo.com> is confusingly similar to the IMPOSSIBLE mark, using the entirety of the IMPOSSIBLE mark in the domain name. Additionally Complainant’s mark is the dominant portion of the domain name, as the IMPOSSIBLE mark is the first element. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For sale, WIPO Case No. D2000-0662 (Sept. 21, 2000) (“[A] domain name is ‘identical or confusingly similar’ to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name.”); see also Chex Systems, Inc. v. Rony Daniel / Outdoor Living Inc, FA1633760 (Forum Sept. 16, 2015) (finding <chexinfo.com> confusingly similar to the mark CHEXSYSTEMS because it included the distinctive “CHEX” portion of the mark).

 

Moreover, Complainant submits that the use of the words “foods” and “IPO” in the disputed domain name in connection with the IMPOSSIBLE mark only serves to increase consumer confusion. The addition of the word “foods” serves to further confuse consumers as to whether the disputed domain name is associated with Complainant. And the addition of the term “IPO” (short for initial public offering) serves to connect the disputed domain name to the recent speculation regarding Complainant’ possible IPO.

 

Complainant submits that Respondent has no rights or legitimate interest in the disputed domain name. To the best of Complainant’s knowledge, Respondent does not hold any trademark registrations that are identical, similar to, or in any way related to the IMPOSSIBLE mark. Respondent is not an authorized representative of nor associated with Complainant. Respondent has hidden behind a Privacy Protection agency and there is no indication Respondent is commonly known by the disputed domain name.

 

Complainant submits that Respondent uses the IMPOSSIBLE mark in the disputed domain name to mislead consumers and direct them to Respondent’s website believing they are visiting an official Complainant website. Once there, consumers are presented with claims that the website is in fact operated by Complainant, including through the privacy policy of Respondent’s website. Respondent’s website also mimics Complainant’ official website  at the <impossiblefoods.com> address, using Complainant’ trademarks in connection with images of Complainant’ products copied from the official Complainant’ website, furthering this deception. Finally, the website to which the disputed domain name resolves solicits personal and financial information, in false relation to the speculated IPO for Complainant, including requesting consumers’ names, incomes, net worth, and more. However, neither the website nor Respondent are affiliated with or authorized by Complainant. Complainant submits that such use does not constitute a bona fide offering of goods or services and is not fair use.

 

Complainant submits that because Complainant has made out a prima facie case, the burden shifts to Respondent to show that it did in fact have rights and a legitimate interest in the disputed domain name. Here, Respondent is using the website to which the disputed domain name resolves to impersonate Complainant and to collect personal and financial information from consumers and therefore Respondent cannot meet its burden.

 

Complainant submits that the disputed domain name was registered and has been used in bad faith.

 

Complainant argues that Respondent was aware of Complainant and its rights to the IMPOSSIBLE mark prior to registering the disputed domain name. Complainant’ constructive date of first use of October 25, 2013, as established through its earliest federal trademark application date (Reg. No. 5459255) for the IMPOSSIBLE mark, predates the registration date for the disputed domain name.

Further, on and around August 22, 2019, several news articles speculating regarding Complainant’s potential IPO were published. Respondent registered the disputed domain name <ImpossibleFoods-IPO.com> also on August 22, 2019. This timing indicates the Respondent knew of Complainant’ rights prior to registering the disputed domain name.

 

Furthermore, Complainant submits that the content on Respondent’s website confirms Respondent’s prior knowledge. The website is entirely focused on Complainant, and the privacy policy stated on the website falsely claims the website is owned or operated by Complainant

 

Complainant additionally submits that the disputed domain name is being used to direct Internet traffic to a website which operates as a phishing website. The website solicits personal and financial information from consumers by claiming to be owned by or affiliated with Complainant, including soliciting consumers’ names, location, income, net worth, and more. Such use constitutes bad faith use and registration. SoftBank Group Corp. D2018-2682 (website which “mislead[s] those who access it and to get their personal information” through a fake IPO-website constituted bad faith registration and use).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant was founded in 2011 and has since engaged in the development and marketing of meat-free food products under the IMPOSSIBLE brand.

Complainant is the owner of the following registered trademarks:

·         United States registered trademark IMPOSSIBLE, registration number 5370337, registered on January 2, 2018 for the following services in international class 43:“[p]roviding of food and drink via a mobile truck; catering services”.

·         United States registered trademark IMPOSSIBLE, registration number 5459255, registered on May 1, 2018 for the following goods in international class 29: “substitutes for foods made from animals or animal products, namely, vegetable-based burger patties; meat substitutes”.

The disputed domain name was registered on August 22, 2019 availing of a privacy protection service.

 

There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the Registrar’s response to the Forum’s request for verification of the registration of the disputed domain name.

 

Respondent uses the disputed domain name as the address of a website which presents Complainant’s trademarks and contains several images of Complainant’ products that are copied from Complainant’ official website.

 

The privacy policy posted on the website to which the disputed domain name resolves states inter alia: “Impossible Foods Inc. automatically collects IP addresses and web site usage information from you when you visit this web site. . . We collect access times and periods of usage for customer services and operational purposes and to help identify if issues persist that require enhancement to system performance.”

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

Complainant has rights in the IMPOSSIBLE trademark which it has acquired through its abovementioned United States trademark registrations and it use of the trademark in its meat-free food business since it was founded in 2011,

 

This Panel accepts Complainant’s submission that the disputed domain name <impossiblefoods-ipo.com> is confusingly similar to the IMPOSSIBLE mark. The disputed domain name consists of the IMPOSSIBLE mark in its entirety in combination with the words “foods” and “IPO”, a hyphen and the gTLD <.com> extension.

 

This Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark because the hyphen and the <.com> extension would have no impact on the perception of the domain name; Complainant’s IMPOSSIBLE mark is the distinctive and dominant element of the disputed domain name; the word foods” is a reference to Complainant’s products; and the letters “IPO” are a recognised acronym for an “initial public offering” of a shareholding in a corporation.

 

Complainant has therefore satisfied the first element of the test in Policy paragraph 4(a)(i)

 

Rights or Legitimate Interests

Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name. To the best of Complainant’s knowledge, Respondent does not hold any trademark registrations that are identical, similar to, or in any way related to the IMPOSSIBLE mark; Complainant has not authorized Respondent to represent Complainant or use Complainant’s mark; there is no indication Respondent is commonly known by the disputed domain name; Respondent uses the IMPOSSIBLE mark in the disputed domain name to mislead consumers and direct them to Respondent’s website believing they are visiting an official website of Complainant; Respondent purports to adopt Complainant’s identity in the privacy policy on the website to which the disputed domain name resolves; and Respondent appears to be requesting consumers’ personal data.

 

Complainant having made out a prima facie case, the burden of production shifts to Respondent to demonstrate rights and a legitimate interest in the disputed domain name. Respondent has failed to discharge the burden and so this Panel finds on the balance of probabilities that Respondent has no rights or legitimate interest in the disputed domain name.

 

Complainant has therefore satisfied the second element of the test in Policy paragraph 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant’s registration and use of IMPOSSIBLE mark, predates the registration date for the disputed domain name on August 22, 2019. Furthermore, on that date several news articles appeared speculating that Complainant was about to initiate an IPO were published.

 

This Panel finds that given the timing of the registration of the disputed domain name, which is composed of a combination of Complainant’s trademark, the word “food” which signifies Complainant’s field of commercial activity and the acronym “IPO” indicates in the circumstances that it is implausible that the registrant of the disputed domain name was unaware of Complainant and its IMPOSSIBLE mark when the disputed domain name was registered.

 

Given that, additionally, Respondent has not responded to this Complaint, and that Respondent availed of a privacy service, this Panel finds that on the balance of probabilities the disputed domain name was registered in bad faith to intentionally target Complainant and its goodwill in the IMPOSSIBLE mark.  

 

On the evidence adduced, Respondent is using the disputed domain name in bad faith as the address of a website, which Complainant correctly asserts is entirely focused on Complainant and on which the privacy policy purports to give the impression that the website is owned or operated by Complainant

 

Also, of great concern is that the content on Respondent’s website solicits personal and financial information from consumers by giving the misleading impression that it is owned by or affiliated with Complainant. Such misleading information on Respondent’s website is indicative phishing by Respondent.

 

In the circumstances, this Panel finds that on the balance of probabilities the disputed domain name has been registered and is being used in bad faith.

 

Complainant has therefore succeeded in the third and final element of the test in Policy paragraph 4(a)(iii) and is entitled to the reliefs requested in the Complaint.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <impossiblefoods-ipo.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

James Bridgeman SC

Panelist

Dated:  November 3, 2019

 

 

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